Nos. 19-1349 & 20-1087. Underwood v. Bank of America Corp.
D.Colo. Judge Matheson. Service Marks—Lanham Act—Cancellation of State Registration of Service Mark—Trademark Infringement—Actual and Analogous Use.
April 26, 2021
Underwood and his website My24HourNews.Com, Inc. (collectively, plaintiffs) own the putative service marks “E.R.I.C.A.” and “my24erica.com.” Underwood claimed he used these marks in his business, which offered internet-based search engine and personal assistant services. In 2010, Underwood applied to register the E.R.I.C.A. service mark in Georgia for a computer animated woman named Erica, and the mark was approved. In 2012, Underwood registered the domain name my24erica.com with GoDaddy.com.
In 2016, Bank of America Corp. (BA) filed an “intent to use” application with the US Patent and Trademark Office (USPTO) for a mobile banking application known as “ERICA.” The USPTO registered the mark in 2018.
Plaintiffs sued BA for infringing on their marks. BA counterclaimed to cancel the Georgia registration of the E.R.I.C.A. mark and for declarations that it had not violated trademark law. BA moved for partial summary judgment on its cancellation counterclaim. The district court granted the motion and ordered the Georgia Secretary of State to cancel the registration. The court also granted summary judgment for BA on plaintiffs’ infringement claims.
On appeal of the cancellation, the Tenth Circuit considered the required showing by BA that it has standing and that there are valid grounds for canceling the registration. Federally unregistered marks may be enforced under state common law or under a state’s registration system. Here, BA had standing to challenge the state law registration because it was sued for infringement, and it had valid grounds to seek cancellation of the registration because Underwood admitted that contrary to Georgia’s statutory use requirement, he did not use the Georgia mark with the services specified in the application before 2015. Accordingly, the registration was improperly granted under Georgia law, and the district court correctly ordered cancellation. Further, Underwood did not show any legal basis to reform the Georgia registration because he could not show that he used the mark with some of the goods or services identified in the application.
Underwood argued that before BA’s October 2016 priority date he established a protectable interest in both marks through actual and analogous use. Where, as here, a plaintiff’s marks are federally unregistered, the plaintiff has the burden to demonstrate the mark is protectable under § 43(a) of the Lanham Act. A protectable interest is acquired by using a distinct mark in commerce through actual or analogous use. On the E.R.I.C.A. mark, although the district court addressed actual use, it used the incorrect legal standard in analyzing actual use by assuming that customers were required to have purchased the services offered or that plaintiffs must have generated revenue to qualify as actual use, and by limiting the services at issue to those listed on the Georgia registration. However, the district court correctly found there was insufficient analogous use of the mark because no reasonable jury could find analogous use from the evidence plaintiffs cited.
On the my24erica.com mark, there is no factual dispute that my24erica.com did not identify and distinguish plaintiffs’ services from the services of others. Like all marks, a domain name must be “used to identify and distinguish the source of goods or services” to be protectable, but here there is no evidence that the designation was used for anything more than an address for reaching a website. Therefore, the mark is not protectable.
The summary judgment on BA’s cancellation counterclaim was affirmed. On the infringement claims, the summary judgment on the my24erica.com mark was affirmed and the summary judgment on the E.R.I.C.A. mark was vacated, and the case was remanded for the district court to apply the correct actual use standard.